Shape Blog

The CAFC's troublesome decision in Lawman Armor Corp. v. Winner Int'l, LLC lives on. In its original decision, the CAFC ruled that, for purposes of determining infringement of a design patent, the overall appearance of a design cannot itself be a "point of novelty."

On May 31, 2006, the CAFC denied Lawman's request for rehearing (here) and for rehearing en banc (here). In denying the rehearing request, the three-judge panel issued a "Supplemental Opinion," attempting to explain its earlier decision:

"In our decision, we did not intend to cast any doubt upon our prior decisions indicating that in appropriate circumstances a combination of design elements itself may constitute a "point of novelty." Such a combination is a different concept than the overall appearance of a design which, as indicated, our cases have recognized cannot be a point of novelty."

"The amicus curiae point out that many, if not most, design patents are novel combinations of known design elements, and that recognition of a design's overall appearance can constitute a point of novelty, in the usage that has evolved in design patent law. The Patent and Trademark Office grants design patents on this basis."

Shape Blog comment: If a combination of elements can be a point of novelty, according to the panel, why can't a combination of all the elements (i.e., the overall appearance of the design) constitute a point of novelty?

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Section 112 requires that patent application specifications contain:

a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most clearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor for carrying out his invention.

Does a typical design patent application do that?

IP blogger Jim Hawes argues they should.

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Issued: May 2, 2006
Inventor: Christopher Mallet, Wiltshire (United Kingdom)

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Issued: May 2, 2005
Inventor: Claude Dreano, Mauron (France)
Assignee: Armor Inox S.A., Mauron (France)

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In a 3-page, nonprecedential decision, the CAFC today affirmed a grant of summary judgment of noninfringement in a design patent case involving the cell phone design shown below. Kyocera Wireless Co. v. President Electronics, Ltd., Appeal No. 06-1131 (May 2, 2006).

The patentee asserted that summary judgment was improper without expert testimony, but the Board disagreed:

The record does not reflect that any of the parties sought to introduce expert evidence, and expert evidence is not always necessary to resolve questions of patent infringement. See, e.g., Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984). While expert evidence may be necessary in cases involving complex technology, see Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004), this is not such a case, and Mr. Colida [the patentee] does not explain how expert evidence would have been helpful. Because we find no error in the district court’s disposition of this case, we affirm the judgment below.

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Issued: April 25, 2006
Inventor: Louvenia Kitty Black-Perkins, San Pedro, CA
Assignee: Mattel, Inc.

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Issued: April 11, 2006.
Inventor: Tonino John Crisafi, Melbourne, Australia.

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The American Intellectual Property Association had filed its amicus brief with the CAFC in support of Plaintiff-Appellant Lawman Armor's Petition for Rehearing in Lawman v. Winner. Download brief here. The Association urges the Court to clarify its opinion either by eliminating any reference to the ninth point of novely (which was not raised by Appellant Lawman below), or to state that the novel appearance of a combination of old elements can constitute a point of novelty.

AIPLA contends that the CAFC's decision "represents a significant shift in well-settled design patent jurisprudence" because it is "at odds with three prior opinions of this Court, which held that a design patent's point of novelty resided in the visual appearance of a novel combination of old elements."

It asserts that "if the visual appearance of a combination of old elements could not constitute a design patent's point of novelty, most design patents will be effectively rendered unenforceable (or more accurately, 'uninfringeable') -- because a design patentee will almost never be able to establish a recognized point of novelty."

AIPLA suggests that the Court "revise the language of its Lawman opinion to clarify that, indeed, the novel visual appearance of a combination of old elements can constitute a design patent's point of novelty." It points out the such a revision would not require reversal of the Court's ultimate holding, because "Appellant failed to assert the visual appearance of a novel combination of old elements as a point of novelty at the district court, and thus the Court need not even address that issue in any revised opinion."

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Issued: April 11, 2006
Inventors: Shannon Dow, Berkeley, CA and Sharon Ellen Kallenberger, Alameda, CA.

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Issued: July 4, 2000
Inventor: James Richard Ethridge, Lake Forest, CA

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Issued: September 14, 1999
Inventors: Donald S. Strum, Hillsborough, NJ and Mark C. Naden, New York, NY

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Issued: April 4, 2006
Inventor: Sylvia Scott, Charleston, SC

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Defendants-Appellees Winner International LLC and WInner Holding LLC have filed their Response to Lawman Armor's Combined Petition for Rehearing and for Rehearing En Banc in the Lawman design patent appeal now pending before the CAFC. Download Response here

The following is the introduction to Defendants-Appellees' ARGUMENT:

"Lawman's combined petition for a panel rehearing and for rehearing en bank [sic] is based on an argument never presented to the district court that granted summary judgment of non-infringement. Indeed, it was not raised until the oral hearing of this appeal. The petition therefore is wholly inappropriate and should be dismissed out of hand.

"Moreover, the argument itself has no connection to the facts and merits of the underlying case. It is based on a hypothetical situation in which a design patent has no discernable points of novelty other than the overall visual impression of the design as a whole. In reality, the design patent at issue has a clear point of novelty, albeit one ignored by the patentee in opposing the motion for summary judgment of non-infringement because the accused devices did not incoroprate the novel feature.

"This clearly is not the proper case for the Federal Court to revisit the settled law of design patent infringement under the point of novelty test. The petition should be denied."

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Issued: June 13, 2000
Inventors: Fred Reiber, San Francisco, CA, and Jean Bellas. Piedmont, CA

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Issued: July 26, 2005
Inventor: Victor Lo, Hillsboroough, CA

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Note the "C" on the hat. C = Chicago Cubs? Wrigley Field? Ivy-covered walls? Get it?

Issued: March 28, 2006
Inventor: Matther Steichen, Carol Stream, Illinois

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At his excellent Patently-O patent law blog, Dennis Crouch discusses the Lawman decision and provides Appellant Lawman Armor's "Combined Petition For Panel Rehearing And For Rehearing En Banc Of Plaintiff-Appellant Laman Armor Corporation." Download Petition here

Dennis Crouch

In its Petition, Lawman asserts that the CAFC's ruling that a combination of known elements cannot comprise a "point of novelty" for infringement purposes leads to the "logical yet impossible" conclusion that "valid design patents can issue and not be capable of being infringed."

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The Industial Design Society of America (IDSA) has filed its amcus brief, penned by design patent guru Perry J. Saidman, in the Lawman case. Download brief here

The following is the Summary of the Argument quoted from the brief:

"For the first time, this Court has held that a combination of old elements shown in the prior art cannot constitute a point of novelty in determining infringement of a design patent. There are five reasons why it is exceptionally important for this holding to be reconsidered.

"First, the Panel decision ignores the real world reality that all designs are combinations of old elements. If left to stand, the Panel decision would render a vast number of valid design patents unenforceable.

"Second, the Panel's fear that permitting a combination of old elements to be a point of novelty would undermine the rationale of the point of novelty test is unfounded. If a valid patent's point of novelty were found to reside in a combination of old elements, the design patent would be narrow. To enforce it against an infringer who appropriated that same combination of old elements serves the interest of justice. There is nothing untoward about enforcing narrow, as well as broad, design patents.

"Third, the Panel decision encourages "back door" attacks on design patent validity using a much lower burden of proof that would otherwise be required. Why should an infringer be permitted to prove that a patent's point of novelty, that distinguishes it over the prior art, is old using a preponderance of evidence standard rather than a clear and convincing standard required of invalidity showings?

"Fourth, there is no precedent for the Panel decision. All courts that have previously considered the issue have found that a combination of known elements may well constitute the point of novelty.

"Fifth, the underlying factual determination that all 8 of Lawman's novel elements were found in the prior art is clearly erroneous. In order to anticipate a novel design element, the visual appearance of the design element must be in the prior art, rather than its functional attributes.

"In sum, this Court should reconsider and reverse the Panel's conclusion that a combination of old elements shown in the prior art cannot constitute a point of novelty in determining infringement of a design patent."

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Issued: July 23, 1996
Inventor: Arvin Peltz

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Ok, it's only two-dimensional, but this is one of the strangest design patents I've seen.

Inventors: Chritopher and Elza Lusher
Issued: March 21, 2006
"The broken line showing of environment is for illustrative purposes only and forms no part of the invention."

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Word on the street is that at least three entities (AIPLA, IDSA, and Nike, Inc.) are preparing to file amicus briefs in connection with the request for re-hearing of the CAFC's Lawman decision, discussed here at the Shape Blog. The Briefs are reportedly due by April 14th.

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On April 10, 2006, the place to be will be "USPTO Design Day" at the United States Patent and Trademark Office: "an open forum with USPTO officials on the state of the USPTO's Design Examination Group, including a discussion on New Examining training, publication and electronic filing." There is no fee to attend, but you must register in advance (form here).

USPTO Design Day
United States Patent and Trademark Office
Madison Building Auditorium (South)
April 10, 2006
8:00 AM - 4:30 PM

"The afternoon session will include a dynamic and informative exchange designed to educate the patent bar and design patent examiners on the design patent process and the unique role that design patents play across a range of industry sectors."

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Issued: June 3, 2003
Inventors: Rolando Lantigua and Carlos Taveres

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Plaintiff Lawman has reportedly filed a request for re-hearing of the CAFC's decision in Lawman Armor Corp. v. Winner Int'l LLC, Appeal No. 05-1253 (February 22, 2006). As discussed here at the Shape Blog, this decision deals a damaging blow to design patent protection.

U.S. Design Patent D357,621

We are informed that the American Intellectual Property Law Association (AIPLA) is considering the filng of an amicus brief in support of this first attempt by Lawman to reverse the appellate court's ruling.

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Santa, please bring me one of these !!

Issued August 30, 2005
Inventor: Nancy Lindblad Gaston

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The U.S. Court of Appeals for the Federal Circuit today reversed a California federal district court's grant of summary judgment in a copyright and design patent infringement case involving several bedroom furniture designs. The court concluded that the district court had misapplied the applicable tests for infringement. Amini Innovation Corp. v. Anthony California, Inc., Appeal No. 05-1159 (Fed. Cir. March 3, 2006).

US Design Patent D475,218
BED FRAME

On the copyright side, the district court mistakenly decided "the fact intensive question of the total concept and feel of the carvings in the furniture." Applicable 9th Circuit law disfavors the grant of summary judgment on that issue. The CAFC found that "a reasonable jury could conclude that at least some of the accused designs satisfy the substantial similarity standard." Therefore summary judgment was inappropriate.

On the design patent side, in considering the infringement issue the district court analyzed each element of the design separately insted of analyzing "the design as whole from the perspective of an ordinary observer." The CAFC could not agree that a reasonable jury could not find that the designs in question are substantially similar. Again, the granting of summary judgment on this issue was in error.

The case was remanded to the district court for further proceedings.

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The CAFC's ruling in Lawman Armor Corp. v. Winner Int'l LLC, 77 USPQ2d 2017 (Fed. Cir. 2006) ), made life much more difficult for the design patent plaintiff. As discussed in the Shape Blog posting of February 22nd (here), the court held that, in applying the "point of novelty" test for design patent infringement, a patentee cannot combine a series of points of novelty into a further point of novelty.

U.S. Design Patent D-357,621
SLIDING HOOK PORTION OF A VEHICLE
STEERING WHEEL LOCK ASSEMBLY

There are two distinct tests for design patent infringement, both of which must be satisfied by the patentee: the "ordinary observer" test and the "point of novelty" test.

"The 'ordinary observer' test requires comparison of the two designs from the viewpoint of the ordinary observer to 'determine whether the patented design as a whole is substantially the same as the accused design.' [citations omitted] Under the 'point of novelty' test, a court must determine whether 'the accused device ... appropriate[s] the novelty in the patented device which distinguishes it from the prior art.'"

"This argument is inconsistent with, and would seriously undermine, the rationale of the 'points of novelty' test. *** If the combination of old elements shown in the prior art is itself sufficient to constitute a 'point of novelty' of a new design, it would be a rare design that would not have a point of novelty. The practical effect of Lawman's theory would be virtually to eliminate the signficance of the 'points of novelty' test in determining infringement of design patents, and to provide patent protection for designs that in fact invlove no significant changes from the prior art."

The Lawman decision is very puzzling, since there is no inherent reason why the overall design of a product could not itself be novel and nonobvious, even though each element of the design might be found in some piece of prior art. For example, suppose one built a car with pieces from eight different vehicles. Couldn't the overall design be inventive, even though the individual parts were not?

Moreover, if there is no novelty in the Lawman design, shouldn't the patent have been declared invalid? Why even get to the infringement issue?

The January 27th Shape Blog posting commented on an article by Perry J. Saidman and Allison Singh in which the authors lamented the demise of the Supreme Court's "ordinary observer" test (Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)) in design patent infringement cases. The requirement of a Markman hearing in design patent cases, they argued, was a fundamental error that has "mortally wounded" the Gorham test.

The Lawman decision is another body blow to the design patent plaintiff. As stated above, to prove infringement, the patentee must pass both the "ordinary observer" test and the "point of novelty" test. The Markman hearing requirement made the first test much more difficult. The Lawman decision has done the same to the "points of novelty" test.

Postscript: The Lawman decision also directly contradicts the CAFC's rulings in Avia Group Int'l, Inc. v. L.A. Gear California, Inc., 7 USPQ2d 1548 (Fed. Cir. 1988), and L.A. Gear Inc. v. Thom McAn Shoe Co., 25 USPQ2d 1913 (Fed. Cir. 1993).

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The U.S. Court of Appeals for the Federal Circuit ruled today that, in applying the "point of novelty" test for design patent infringement, a patentee cannot combine a series of points of novelty into a further point of novelty. Lawman Armor Corp. v. Winner Int'l LLC, Appeal No. 05-1253 (February 22, 2006)

U.S. Design Patent D-357,621
SLIDING HOOK PORTION OF A VEHICLE
STEERING WHEEL LOCK ASSEMBLY

Plaintiff-patentee Lawman listed eight points of novelty for its design, but it did not challenge the district court's ruling that these eight points were shown in prior art patents. Instead, Lawman argued that the combination of these eight non-novel points in a single design was itself a ninth point of novelty. The Board rejected that approach:

"This argument is inconsistent with, and would seriously undermine, the rationale of the 'points of novelty' test. *** If the combination of old elements shown in the prior art is itself sufficient to constitute a 'point of novelty' of a new design, it would be a rare design that would not have a point of novelty. The practical effect of Lawman's theory would be virtually to eliminate the signficance of the 'points of novelty' test in determining infringement of design patents, and to provide patent protection for designs that in fact invlove no significant changes from the prior art."

The CAFC therefore affirmed the district court's summary judgment of non-infringement.

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I just found a blog that covers expired design patents, "The Frankie Files." Interesting...

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Issued January 17, 2006 and assigned to Kraft Foods Holdings, Inc.

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In "The Death of Gorham Co. v. White: Killing It Softly with Markman," 86 Journal of the Patent and Trademark Office Society 792 (October 2004), Perry J. Saidman and Allison Singh lament the current demise of the Supreme Court's "ordinary observer" test for design patent infringement laid out two centuries ago in Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871):

... if, in the eye of the ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an ordinary observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. 81 U.S. at 528.

The Gorham test affords a design patent some scope of coverage beyond the precise design depicted in the patent. In Gorham, the Court found infringement of the patented Gorham design shown here on the left, by the two White designs shown on the right.

However, in 1995, the United States Court of Appeals for the Federal Circuit, in Elmer v. ICC Fabricating, Inc., 36 USPQ2d 1417 (Fed. Cir. 1995), ruled that the requirement of a Markman hearing to interpret the meaning of a patent claim is applicable to design patents (even though a design patent contains a single claim in standard language that simply refers to the design shown, without any elaboration). [Elmer relied on the CAFC's Markman decision of 1995, affirmed by the Supreme Court in 1996].

Thus courts must now verbalize the invention in a design patent, and then compare that verbalization with a description of the accused design. The authors assert that this approach has resulted in a disregard for Gorham's ordinary observer approach and a narrowing of protection for design patents. Once the patented design is reduced to words, differences from the accused design become magnified. As an example, the authors cite OddzOn Prods., Inc. v. Just Toys, Inc., 43 USPQ2d 1641 (Fed Cir. 1997), in which the design on the right (for a toy football) was found not to infringe the patented design on the left.

According to Saidman and Singh, application of the Markman requirement to design patents was a fundamental error that has "mortally wounded" the Gorham test. They urge that "it is time to acknowledge that a design patent is fundamentally different from a utility patent, and finally relieve design patent owners and courts from the stranglehold of Markman."

Having litigated both utility and design patents myself, I think the authors are spot on.

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Retro roadside diner designs.

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Retro gas station designs.

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USPTO's A Guide to Filing a Design Patent Application

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